WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mansion (Gibraltar) Limited, Provent Holdings Ltd v. Junaid Moerat
Case No. DCO2013-0012
1. The Parties
The Complainants are Mansion (Gibraltar) Limited (First Complainant) and Provent Holdings Ltd (Second Complaint), of Gibraltar and British Virgin Islands respectively, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Quahe Woo & Palmer LLC, Singapore.
The Respondent is Junaid Moerat of Durbanville, South Africa.
2. The Domain Name and Registrar
The disputed domain name <mansioncasino.co> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2013. On May 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 7, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on May 17, 2013.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 6, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2013. The Respondent communicated with the Center on June 19, 2013 by way of supplemental filing.
The Center appointed Alistair Payne as the sole panelist in this matter on June 18, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The First Complainant is a leading international online casino, poker, sportsbook and sports exchange gaming entertainment company which has operated out of Gibraltar through a number of websites including <mansion.com> and <mansioncasino.com> since 2004 and has operated a free website at <mansionpoker.com> since 2005. These domain names are registered in the name of the second Complainant who also owns numerous trade marks relating to the words “mansion” and “mansioncasino” including a community trade mark registration for MANSION CASINO under registration number 003951555 dating from July 29, 2004 and also a community trade mark registration for MANSION under registration number 003951811 dating from July 29, 2004.
The Respondent registered the disputed domain name on October 29, 2012 and the disputed domain name resolves to a website which is blank except for the words “soon to be the new home of www.mansioncasino.co”.
5. Parties’ Contentions
The Complainant submits that it has made very substantial use of its various MANSION marks, including by way of significant international promotion and sponsorship arrangements and that its website at “mansion.com” and “mansioncasino.com” attract more than 275,000 visitors per month.
The Complainant submits that it owns registered trade mark rights in the MANSION and MANSION CASINO trade mark as set out above and that the substantive elements of the disputed domain name are identical to the MANSION CASINO mark or confusingly similar to the MANSION mark.
It says that it has neither authorised nor licensed the Respondent’s use of its mark in the disputed domain name and that there is no evidence that the Respondent has sought to make a bona fide offering of goods or services under the disputed domain name. The Complainant says that the Respondent is not commonly known by the disputed domain name and that its use is neither legitimate nor fair in that it is seeking to use the disputed domain name to divert Internet users to its website.
As far as bad faith is concerned the Complainant says that the Complainant had registered some of its “Mansion” marks at least 10 years before the registration of the disputed domain name and that in the circumstances of the renown attaching to the Complainant’s marks and business it appears that the Respondent only registered and intends to use the disputed domain name to disrupt the Complainant’s business by confusing Internet users seeking the Complainant’s website at <mansioncasino.com> for the Respondent’s own commercial gain. The Complainant says that this is effectively a sort of typosquatting in that the disputed domain name is calculated to divert people who misspell its domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Preliminary Procedural Issues:
In accordance with paragraph 10 and 12, the Panel has the sole discretion to accept supplemental filings, in this case, the Panel will not on this occasion admit the very late communication from the Respondent on June 19, 2013 which adds nothing and is in any event out of time. This Panel also notes that the Respondent did not demonstrate any “exceptional” circumstances to accept such late communication.
This Panel accepts that the Complainants bring a single consolidated complaint against the Respondent, as the Complainants are related companies and they have a common grievance against the Respondent.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns a community word mark registration for MANSION CASINO under registration number 003951555 dating from July 29, 2004. The disputed domain name is identical to this mark and as a result the Panel finds that the Complaint succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant submits that it has not licensed or authorised the Respondent’s use of the disputed domain name and that there is nothing to suggest that the Respondent is known by the disputed domain name or is using the disputed domain name in connection with offering any bona fide goods or services. In view of the manner in which the Respondent is using the disputed domain name as set out under Section C below, the Complainant says that the Respondent is using the disputed domain name to misleadingly divert consumers.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests and that there is no evidence before the Panel to rebut this case. Accordingly the Complaint succeeds under the second element of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name was registered in October 2012 some eight years after the Complainant first commenced its operations. The term “mansion casino” although comprised of two ordinary words in the English language is not wholly descriptive for the operation of online gaming services and use of the term “mansion” in this regard enjoys a degree of distinctiveness. The Complainant has also demonstrated that it has very substantial Internet user traffic to its main website at <mansion.com> and <mansioncasino.com> and through major international sponsorship and promotional activities, for instance with the Tottenham Hotspurs and Manchester City football clubs and on the Fox Sports Network, has widely publicised its business and has developed a significant degree of renown in relation to its MANSION family of marks.
In these circumstances and considering the use that the Respondent has subsequently made of the disputed domain name to resolve to a website which is blank except for the words “soon to be the new home of www.mansioncasino.co”, the Panel infers that the Respondent must have been aware of the Complainant’s business and name or mark when it registered the disputed domain name in October 2012. As the Respondent was looking to enter the online gaming sector and considering the degree of renown attaching to the Complainant’s business and mark, the Panel considers that, on the balance of probabilities, it must have known of the Complainant’s well established and publicised business, or have become aware of it through online searching, prior to choosing the disputed domain name.
The Panel finds that it is too much of a co-incidence for the Respondent to have chosen an identical domain name in the “co” space in relation to the same field of activity and that it is a reasonable inference that the Respondent registered the disputed domain name purposefully in the “.co” domain name space in order to confuse or divert Internet users searching for the Complainant’s business and website. In doing so the Respondent’s intention appears to have been to take advantage of the reputation and goodwill attaching to the Complainant’s mark in bad faith.
Under paragraph 4(b)(iv) of the Policy registration and use in bad faith occurs where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its’ website or other on-line location, by creating a likelihood of confusion with the Complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. The Panel finds that the Respondent has intentionally attempted to divert Internet users to its website at the disputed domain name by creating a likelihood of confusion with the Complainant’s mark and in order to promote its intended casino business. This therefore comprises evidence of registration and use in bad faith under paragraph 4(b)(iv) of the Policy and in the absence of any explanation from the Respondent the Panel finds that the Complaint succeeds under the third element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <mansioncasino.co> be transferred to the Complainants.
Date: June 30, 2013